Sunstar Overseas Ltd (Plaintiff) v Rameshwar Dass
Garg (Defendant), was a suit for permanent injunction alleging
trademark infringement and passing off, etc.
Sunstar Overseas, the Plaintiff in this case claimed ownership
of the mark "ALISHAN", they further stated that they had
been using the said mark extensively and continuously since 2004,
in respect of processed rice and also in the course of trade
including export trade. Another contention was that the
"ALISHAN" mark had a strong association with the
Plaintiff, and in connection with those products or goods marked by
Towards the abovementioned end, the Plaintiff submitted
documents which included photographs of packaging material and
copies of invoices. The Court had granted an ex parte injunction
against the Defendants on 11.09.2009. The Plaintiff on becoming
aware of the Defendant's use of the mark "AALISHAN",
from a trademark registration advertisement, complained that such
use by the Defendant in respect to similar products i.e. rice,
maida, suji, salt and other condiments would result in confusion,
as to their origin, which would be prejudicial to the Plaintiff. A
notice of opposition was filed by the Plaintiff against the
registration of the Defendant's mark, which is still
The Defendant responded contending that they are bona fide user
of the mark "AALISHAN" from 04.01.2002 in an artistic
manner and also that the Plaintiff's were well aware of such
use and the defendant's proprietary rights. The Defendant
pointed out that the Plaintiff's application for
"ALISHAN" in 2004 which was granted, was based on a
"Proposed to be used" basis rather than a
"user" basis. Further, it was pointed out that other
materials on record also revealed the fact of the Plaintiff never
having used the mark "AALISHAN" as was claimed in the
The Court observed that the rival marks "AALISHAN" and
"ALISHAN" were phonetically similar to the point of
identity. The term "AALISHAN" in hindi means
"magnificent". The Court further stated that although
there was no doubt that the mark was arbitrary, but at the same
time it was also a common word, and in such an event the user of
the mark had to establish a fair degree of secondary meaning or
acquired distinctiveness of that mark in respect of the product.
The question before the Court was to establish whether the
Plaintiff's claim of acquired distinctiveness was in fact
The Court stated that it was in fact undisputable that the
Plaintiff was the owner of the registered trademark
"ALISHAN". The question therefore was whether the
Defendant was a bona fide prior or concurrent user or adopter of
the similar "AALISHAN" mark. It was noted that the
invoices produced by the Plaintiff contained some semblance of the
description "ALISHAN" product and related to the period
2006 onwards, and there was no material to substantiate usage of
the mark prior to that time. The fact that both the parties were
involved in the same trade made the Plaintiff's claim of
ignorance and becoming aware of the Defendant's use only in
2008 unbelievable. A very significant fact pointed out by the Court
was that a trade directory of 2009 and publication Grain Mirror 0f
2007-2008, both contained the Defendant's "AALISHAN"
and the description of Plaintiff's product- not
"ALISHAN" but "HALO". There was not a single
advertisement in any newspaper or trade journal or directory of the
In Biswaroop Roy Choudhary v. Karan Johar; Standard
Ideal Co. v Standard Sanitary Mfg. Co.; and Britannia
Industries Ltd v Cremica Agro Foods Ltd, Courts had held that
in order for protection of exclusivity for common words and phrases
, the Court must be satisfied that there is a minimum degree of
acquired distinctiveness established form the record. In the
present case, the Court found no such acquired distinctiveness and
thus dismissed the Plaintiff's application of injunction and
the previous ex parte injunction was vacated.
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